As we have discussed in many previous posts, restrictions are a little-analyzed part of prosecution, and they receive much too little attention from patent prosecutors. Any advanced patent strategy must consider restriction practice, and whether the applicant is a small entity with a single application or a large corporation with a large portfolio, restrictions can have major impacts on timing, costs, claim scope, etc.
One part of an overall strategy with regard to restrictions is knowing how to fight them, when needed. The idea that petitions against restrictions are difficult to win is flat wrong. The idea that fighting restrictions is expensive can also be wrong, depending on the strategy used to fight them. Here, we review a great example of how to utilize the Office's own actions to prove that the restriction is improper. What is nice about this example is that it does not require the applicant to prove anything.
US 15/073,732 is an application for a wrench with an integrated support rest (see the figure below). The design allows a plumber to place the wrench on the floor and keep it stable, to that it cannot tip, move, or slip. The design does so with an integrated piece and thus is more advantageous the prior art approaches, at least according to the specification.
The application received a restriction as follows between system and method claims.
The applicant elected with traverse and the Examiner maintained the restriction. The applicant then petitioned. The applicant's petition hit all the main points, but one key argument related to the search burden (all restrictions must have a serious search burden to be proper). Here, the applicant astutely noted that, as this was a continuation application, and because the parent application confirmed that the Examiner had already searched both of the different classifications (see I and II above), there could be no search burden.
While the petition was successful, we do not know if this was the main reason for its success, but this case does illustrate two important points. First, petitions against system/method as related process and apparatus can be successful. Second, always look for ways to use the Office's own actions to negate the search burden. Examiners often feel so over-confident that no one will ever challenge their restriction that they provide the astute applicant a short put if one knows where to look.
So, remember to evaluate whether it makes sense to contest restrictions as part of a portfolio-level strategy or in individual cases. At the same time, there are situations where an applicant is very happy to receive a restriction. So make use of them as a tool to achieve your goals rather then let the Office dictate the direction of your IP.